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Friday, September 30, 2011

Timelines, Inc., has filed suit in the Northern District of Illinois against Facebook, seeking to enjoin the launch of its new product, which it has marketed under the name "Timeline." Plaintiff Timelines owns three federally registered trademarks on which it bases its suit: "TIMELINES" (Reg. No. 3,684,074); "TIMELINES.COM" (Reg. No. 3,764,134) and a graphic depiction of the word TIMELINES (Reg. No. 3,784,720). Each of these trademarks has been registered in Class 42 for: "Providing a web site that gives users the ability to create customized web pages featuring user-defined information about historical, current and upcoming events; and application service provider, namely, managing web sites of others in the fields of historical, current and upcoming events." (Emphasis added).

In its Complaint, Plaintiff Timelines alleges that around September 23, 2011, it learned that Facebook was planning to launch a service called Timeline – and make it available as early as October 1 – which is described at https://www.facebook.com/about/timeline. (ECF No. 1, Complaint, ¶ 8; Pacer access required to access this document). (The link to Facebook's explanation of its new Timeline product was active when I checked it this afternoon, but perhaps it will disappear (or be "inaccessible") during the pendency of the lawsuit – particularly if a temporary restraining order (TRO) is issued.) Plaintiff Timelines alleges that "this service is identical or nearly identical to what Timeline offers" (id.), that Facebook knew it was causing confusion (id. ¶ 9) and that Facebook has now disabled access to Plaintiff Timelines' own Facebook page (id. ¶ 10).

For context, Plaintiff Timelines explains that its own website has averaged approximately 97,000 visitors per month in 2011 and that it has "invested several million dollars into its business and has taken swift action to protect its Marks." (Id. ¶¶ 24, 27).

Plaintiff Timelines alleges trademark infringement (§ 1114) based on likelihood of confusion deriving from a false implication of sponsorship or affiliation, and willful infringement, all resulting in claimed immediate and irreparable harm, leaving Timelines without an adequate remedy at law. (Id. ¶¶ 33-39). It also alleges false designation of origin (§ 1125), which it claims will improperly suggest a relationship between Timelines and Facebook and "destroy the source-identifying function and goodwill that Timelines has cultivated in its TIMELINES marks." (Id. ¶ 43). Again, Timelines makes a claim of willful infringement on this second count. Timelines also seeks relief under state consumer fraud laws and the uniform deceptive trade practices act. (Id. ¶¶ 48-59).

Plaintiff Timelines seeks temporary, preliminary and permanent injunctive relief to prevent Facebook from using TIMELINE or TIMELINES or anything confusingly similar as well as money damages and "any other relief the Court deems just." (Id. ¶ 12). It seeks attorneys' fees, court costs, compensatory damages, exemplary damages, Facebook's profits, treble damages based on the willful infringement claim, and punitive damages pursuant to the consumer fraud claims. (Id. Prayer for Relief). It also seeks publication of corrective advertising and a written accounting by Facebook within thirty days of the entry of the order detailing the "manner and form" in which Facebook complied with the order.

There may be a typo in the Complaint – in the Prayer for Relief, Timelines requests "That Facebook recover its costs of court" – which makes no sense, so they must have meant to request "That Timelines recover its costs of court." (Id. at page 11).

Plaintiff Timelines also filed its motion for TRO today, along with a memo of law in support. ECF Nos. 7 & 8, Civil Action No. 11-6867 (N.D. Ill.) (Pacer access required to access these documents). In its motion for TRO, it specifically requests that Facebook be prevented from using these trademarks, from launching the service using these trademarks, and be required to distribute corrective advertising to dispel the "false and misleading impression" caused by Facebook's promotional materials to date. ECF No. 7. (In other words, it only seeks a TRO to prevent further damage caused by Facebook's alleged actions – any monetary damage claims will be handled at a later point in this case.)

Wednesday, September 28, 2011

In a prior series of posts (see "fictional characters" category), I wrote about a so-called unauthorized sequel to J.D. Salinger's classic Catcher in the Rye that the trial court ordered enjoined from publication. The publisher took the case on appeal, and the appellate court overturned that decision, ruling that the injunction could remain in place for ten days after the entry of the remand order. Salinger v. Colting, No. 09-2878 (2d Cir. April 10, 2010) (copy available on FindLaw). Following stipulated extensions of the injunction, the case finally settled for undisclosed terms.

In a "Permanent Injunction and Final Order on Consent" filed on December 14, 2010, the Southern District of New York entered a permanent injunction against the manufacture, publication, distribution, shipment, advertisement, promotion, sale or other dissemination of the book – "or any portion thereof" – in the U.S. Salinger et al. v. Colting, writing under the name John David California, et al., Civil Action No. 09-5095, ECF No. 55 (Pacer access required). The parties also agreed to forego any appeals, thereby suggesting that unless one of the parties violates the settlement agreement, we will not be seeing this particular title on U.S. shores while the Agreement is in force. (A quick Internet search reveals that the book remains available in certain markets overseas.) The Order also requires the clerk of court to close this case.

This agreed-upon settlement means that despite defendants' victory in the appellate court, there must have been some risk remaining that they might lose at trial. Because the terms of the settlement were undisclosed, one can only speculate that this risk must have been significant enough to balance the expense they already incurred in producing the book, including publicity and advertising, and not receiving sales revenues for it. Perhaps the risk of monetary damages (17 U.S.C. § 504) or fee shifting (awarding attorneys' fees and costs to the prevailing party – 17 U.S.C. § 505) prompted the decision.

Thursday, September 22, 2011

The U.S. Trade Representative today released a request for public comment regarding its Special 301 Out-of-Cycle Review of Notorious Markets. 76 Fed. Reg. 184 (published Sept. 22, 2011). In its summary of the request, the USTR explained:

"In 2010 the Office of the United States Trade Representative (USTR) began publishing the notorious market list as an 'Out of Cycle Review' separately from the annual Special 301 report. This review of Notorious Markets ('Notorious Markets List') results in the publication of examples of Internet and physical markets that have been the subject of enforcement action or that may merit further investigation for possible intellectual property infringements. The Notorious Markets List does not represent a finding of violation of law, but rather is a summary of information that serves to highlight the problem of marketplaces that deal in infringing goods and which help sustain global piracy and counterfeiting. USTR is hereby requesting written submissions from the public identifying potential Internet and physical notorious markets that exist outside the United States and that may be included in the 2011 Notorious Markets List.

The first Out-of-Cycle review of Notorious Markets was published in February 2011, following a similar request for public comments, and is available on the USTR site. The 2011 Annual Report (published in April 2011 with country reports and a watch list) is also available.

The deadline to respond with comments is October 26, 2011. Specifically, the USTR is looking for detailed information about potential markets "where counterfeit or pirated products are prevalent to such a degree that the market exemplifies the problem of marketplaces that deal in infringing goods and help sustain global piracy and counterfeiting." Id. ¶ 2a. If possible, the USTR would like to see location of the market, principal owners/operators (if known), types of products sold, distributed or otherwise made available, volume of traffic of the website (such as the Alexa ranking), and any known enforcement activity against it (including any requests for takedown of infringing content and the site's response). Id. ¶ 2b.

The USTR will maintain a docket of public comments received about these markets, which will be open for public inspection, except for certain confidential business information, pursuant to 15 C.F.R. § 2006.13. This docket should be available here. (My apologies in advance if this link doesn't work – there were no comments posted when I tested it, but I think the link will be active soon. As an alternative, visit http://www.regulations.gov/, search for public submission and enter "USTR-2011-0012" in the Keyword or ID field.)

Thursday, September 15, 2011

The Senate Judiciary Committee's Subcommittee on Antitrust, Competition Policy and Consumer Rights will hold a public hearing on September 21, 2011 at 2:00pm (Eastern) in the Dirksen Senate Office Building, Room 226. The hearing is entitled, "The Power of Google: Serving Consumers or Threatening Competition?" The witness list has not yet been posted.

It appears the hearing will be simulcast over the web, through a link provided in the notice.

Thursday, September 1, 2011

According to an opinion issued earlier this summer by the U.S. Court of Appeals for the Third Circuit (N.J.), removing the photographer's credit from a magazine copy of his photograph before re-using it can qualify as "copyright management information" for purposes of determining whether a defendant has violated the Digital Millennium Copyright Act ("DMCA"), particularly 17 U.S.C. § 1202. Murphy v. Millennium Radio Group, No. 10-2163, 2011 U.S. App. LEXIS 11984 (3d Cir. June 14, 2011). Note that this opinion did not conclude whether or not the infringement occurred – just whether the removal of the photographer's credit information that appeared in the "gutter" of a magazine could qualify as actionable removal of copyright management information under the DMCA. A determination of the substantive liabilities in this case has yet to be made.

Plaintiff Peter Murphy, a professional photographer, was hired in 2006 by New Jersey Monthly magazine to take the photograph of Craig Carton and Ray Rossi, two radio show hosts, who were to be named "best shock jocks" in an upcoming article. The photograph was risqué (showing Carton and Rossi "standing, apparently nude," behind the radio station's sign). Murphy retained copyright in the photo.

After the magazine was published, an employee of the radio station scanned the image (without the caption explaining the award or the gutter credit naming Murphy as the photographer) and posted it to the radio station's web site and to another site. The radio station's web site invited visitors to alter the image and submit it to the radio station for feedback. The radio station posted 26 of these alterations on its web site. At no time did the radio station or the hosts obtain Murphy's permission to use the original or an altered version of the photo.

When Murphy found out about this use, his attorney sent a cease and desist letter to the radio station, demanding that the infringing use cease. Shortly thereafter, Carton and Rossi featured Murphy in one of their radio shows in which they allegedly recommended that listeners avoid doing business with him because "he would sue his business partners" and suggested that he was gay (despite his self-identification as a heterosexual married man with children of his own).

Claims

This lawsuit ensued. Murphy sued the radio station and the two hosts (collectively referred to in the opinion as "Station Defendants") for copyright infringement under the Copyright Act, violations of § 1202 of the DMCA, and defamation under NJ law. After denying Murphy's requests for additional discovery relating to his defamation claim, the Trial court ultimately granted the Station Defendants' motion for summary judgment, which dismissed all of Murphy's claims.

Murphy appealed, arguing that "by reproducing the Image on the two websites without the [magazine] credit identifying him as the author, the Station Defendants violated the Digital Millennium Copyright Act." Id. at 9. In turn, the Station Defendants argued that the § 1202 cause of action could not survive because the gutter credit was not an "automated copyright protection or management system" – in essence claiming that the activity proscribed by § 1202 was limited only to digital information embedded within the work, not to any information that appeared "near the Image" in question. Id. at 10, 19.

Trial Court's Opinion

In its opinion granting the Station Defendants' summary judgment motion (Summary Judgment Opinion, ECF No. 43, Mar. 31, 2010), the trial court concluded that a "photography credit in the gutter of a print magazine . . . was in no way a 'component of an automated copyright protection or management system'" as required by an earlier case in the same court (IQ Group, Ltd. v. Wiesner Publ., LLC, 409 F. Supp. 2d 587 (D.N.J. 2006)). Moreover, it opined that "the fact that a [magazine] employee used a software program to compose the page and insert the gutter credit does not bring this case into the scope of the DMCA." Summary Judgment Opinion, ECF No. 43 at 6-7. Specifically, "[t]he DMCA should not be construed to cover copyright management performed by people, which is covered by the Copyright Act, as it preceded the DMCA; it should be construed to protect copyright management performed by technological measures of automated systems." Id. at 7 (citations omitted).

The Appeal

Murphy appealed claiming numerous errors in the trial court's opinion, among them that the court erred when it determined that § 1202 required the tampering with electronic copyright management information.

This appears to be a case of first impression. Murphy v. Millennium Radio Group, No. 10-2163, at 10-11 (3d Cir.). In its opinion vacating the trial court's opinion and sent the case back for further proceedings, the appeals court focused its analysis of the DMCA issue largely on the issue of whether "the definition of 'copyright management information' should be restricted to the context of 'automated copyright protection or management systems'" as defendants argued, and as the trial court opined. Id. at 12.

Remember that this case involves a photograph copied from its paper form – not an electronic image. Indeed, the radio station employee created the scanned copy (without copying the gutter credits or the caption that the magazine prepared). Thus, the image that the Station Defendants copied was not in electronic form when the copy was made.

However, is a digital image required in order to invoke the DMCA? Both the Station Defendants and Murphy agreed that "whatever CMI is, it is not necessary for it to be digital. For example, they concede that a bar code printed in ink on a paper label might be CMI." Id. at 17 n.11. Their dispute focuses on whether the CMI must function "in connection with an electronic or automated copyright protection or management system" or whether it can appear in a variety of forms. Id. at 17 n.12.

The appellate court's opinion focuses a great deal on the statutory construction of § 1201 of the DMCA (which requires the "circumvention of technological measures" – a phrase that does not appear in § 1202). In addition, the court noted that § 1202 explicitly defines copyright management information to include information 'conveyed in connection with copies . . . of a work . . . including in digital form . . . ." In addition, nothing about the statute indicates that § 1201 and § 1202 have to be interpreted as interrelated. "Instead, to all appearances, § 1201 and § 1202 establish independent causes of action which arise from different conduct on the part of defendants, albeit with similar civil remedies and criminal penalties." Id. at 13.

Ultimately, the appellate court concluded that "a cause of action under § 1202 of the DMCA potentially lies whenever the types of information listed in § 1202(c)(1) – (8) and 'conveyed in connection with copies . . . .of a work . . . including in digital form' is falsified or removed, regardless of the form in which the information is conveyed." Id. at *22 (emphasis added). This essentially means that copying a work appearing in hard copy form by transforming it into a digital version – but omitting any credit details that appeared with the work in its hard copy form, can qualify as the basis for a cause of action under § 1202.

Further Activity in the Case

Note that this appeal only addressed whether the gutter credit information could qualify as "copyright management information," thus permitting an application of § 1202 to the analysis. It does not address whether or not other aspects of the DMCA claim can be met, as this claim was not presented to the appellate court for consideration. It remains to be seen whether plaintiff's claim on this cause of action can survive after this initial victory.

The appeal also addressed the copyright infringement and defamation claims, as well as the trial court's cursory analysis of both in its Summary Judgment Opinion. Without going into detail here, the appellate court concluded that the trial court erred in finding that the Station Defendants' use of the unaltered photograph constituted fair use (Id. at 20-27) and in declining to permit discovery into the defamation claim (Id. at 28-30). Both of these decisions were vacated and the case has been remanded for further proceedings.

The next scheduled event on the trial court's docket – now that the case has been remanded to the lower court for further proceedings – is a status conference set for September 14, 2011. ECF No. 56, Aug. 31, 2011. It appears that during a Rule 16 scheduling conference held on August 30, the parties mentioned pending settlement discussions, as correspondence sent to the court indicates that additional discussions will be held on September 9. Id.

About Me

I am an IP attorney practicing with Eckert Seamans Cherin & Mellott in their IP practice in the Philadelphia ofice. You can also follow me on Twitter: @PaTMLawyer. PLEASE NOTE: ALL OF THE VIEWS EXPRESSED IN THIS BLOG ARE MINE ALONE, AND DO NOT NECESSARILY REFLECT THE VIEWS HELD BY OTHER ATTORNEYS IN THE FIRM.

Disclaimer of Legal Advice

Please be advised that nothing in this blog constitutes legal advice. It is merely an analysis of some of the issues raised by particular events or statutory developments. If you have particular concerns that you wish to have addressed, please contact a lawyer directly so that your specific circumstances can be evaluated.